USPTO Patents Application 09870801

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WILLIAM L. ANTHONY (State Bar No. 106908)
ERIC L. WESENBERG (State Bar No. 1 39696)
HEIDI L. KEEFE (State Bar No. 178960)
ORRICK, HERRINGTON & SUTCLIFFE, LLP
1000 Marsh Road
Menlo Park, CA 94025
Telephone: 650-614-7400
Facsimile: 650-614-7401

STEVEN ALEXANDER (admitted Pro Hoc Vice)

KRISTIN L. CLEVELAND (admitted Pro Hoc Vice)

JAMES E. GERINGER (admitted Pro Hoc Vice)

JOHN D. VANDENBERG

KLARQUIST SPARKMAN, LLP

One World Trade Center, Suite 1 600

121 S.W. Salmon Street

Portland, OR 97204

Telephone: .503-226-7391

Facsimile: 503-228-9446

Attorneys for Defendant and Counterclaimant,
MICROSOFT CORPORATION

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
OAKLAND DIVISION

CASE NO. C01-1640 SBA

MICROSOFT CORPORATION'S
PATENT LOCAL RULE 4-2
DISCLOSURE OF PRELIMINARY
CLAIM CONSTRUCTION AND
EXTRINSIC EVIDENCE (LIMITED
TO "MINI-MARKMAN" CLAIMS)

INTERTRUST TECHNOLOGIES
CORPORATION, a Delaware corporation,

Plaintiff,

v.

MICROSOFT CORPORATION, a
Washington corporation,

Defendant.

MICROSOFT CORPORATION, a
Washington corporation,

Counterclaimant,

v.

INTERTRUST TECHNOLOGIES
CORPORATION, a Delaware corporation,

Counter Claim-Defendant

MICROSOFT CORPORATION'S PATENT LOCAL
RULE 4-2 DISCLOSURE (LIMITED TO "MINI-
MARKMAN" CLAIMS), Case No. C 01-1640 SBA

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Pursuant to Patent Local Rule 4-2 and this Court's Order, entered November 5, 2002,
Defendant Microsoft Corporation ("Microsoft") hereby serves its "Disclosure Of Preliminary
Claim Construction And Extrinsic Evidence," limited to the twelve selected "Mini-Markman"
patent claims. Microsoft's preliminary claim construction is based upon the proposed terms,
phrases and clauses, and claims as a whole, identified by the parties in their submissions in
accordance with Patent Local Rule 4- 1(a) and conference in accordance with Patent Local Rule 4-

1(b)- ,

Microsoft provides its preliminary claim construction of each of the 12 "Mini-Markman"
claims subject to the limitations and reservations of rights set forth herein. Mitrosoft does not
waive any defenses that the asserted claims fail to satisfy the provisions of 35 U.S.C. § 1 12
including, for example, the written description requirement, the definiteness requirement, or any
other requirement for patentability. Microsoft does not concede that the asserted claims are
supported by Plaintiffs original application or any application from which they purportedly claim
priority. Specifically, by offering a construction of a term, Microsoft does not waive any defense
that the claim is in fact indefinite and there can be no proper construction.

Microsoft provides its preliminary claim construction in the following format Exhibit A
sets forth Microsoft's preliminary construction of (1) the claim term "virtual distribution
environment" ("VDE"), (2) the "VDE invention" disclosed in the February, 1995, InterTrust
patent application, and (3) certain other claim terms. Exhibit B sets forth Microsoft's preliminary
construction of the disputed claims as a whole, and particular claim phrases in dispute, in the
order of appearance in a claim. Where an individual claim term (within a phrase) is also in
dispute, it will be bold-faced in Exhibits A and B. Exhibit C sets forth Microsoft's preliminary
construction of the individual terms in dispute, in alphabetical order.

Microsoft reserves the right to modify its preliminary claim constructions in the event that
the parties are unable to agree upon a particular claim construction. Furthermore, because
InterTrust has not yet fully complied with the disclosure requirements of Patent Local Rules 3-1
and 3-2, Microsoft expressly reserves the right to amend its preliminary claim construction if

MICROSOFT CORPORATION'S PATENT LOCAL
RULE 4-2 DISCLOSURE (LIMITED TO "MIN1-
-1- MARKMAN" CLAIMS), CaseNo. C 01-1640 SBA

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evidence becomes available through those disclosures (or that should have been provided therein)
that would support amended constructions. Microsoft further reserves the right to amend its
preliminary claim constructions once it has an opportunity to review InterTrust's preliminary
claim constructions and once the parties have further met and conferred as required.

Preliminary Identification of Evidence in Support of Claim Construction

Microsoft' s preliminary claim construction is supported by the intrinsic record of the
seven U.S. patents from which the 12 "Mini-Markman" claims are selected. For the purposes of
submission of this preliminary claim construction only, Microsoft treats the "intrinsic 55 evidence
as including: 1) the specifications of each of the seven U.S. patents at issue in the "Mini-
Markman" proceeding, including any material purportedly incorporated by reference therein;
2) the prosecution history of each of the seven patents at issue, including the applications and
prosecution history of the seven patents and any related patent applications, including without
limitation, applications purportedly incorporated by reference or to which an application claimed
priority; and 3) all references cited in the prosecution of any such applications. In accordance
with the local rules, this evidence is not specifically identified, except to the extent that Microsoft
asserts particular sections of a patents' specifications provide "structure" for claims properly
construed under 35 U.S.C. § 112(6).

In certain circumstances, Microsoft's preliminary construction may be supported by
extrinsic evidence presently available to Microsoft. Microsoft reserves the right to modify or
supplement with evidence that it has not yet been able to fully review, due to InterTrust's
production, including without limitation, InterTrust re-production of over 1,000,000 pages on
November 4, 2002. Microsoft reserves the right to supplement with additional evidence gathered
in the course of the discovery collected between now and the close of "claim construction"
discovery or later submitted by InterTrust in full compliance with its disclosure obligations under
Patent Local Rules 3-1 and 3-2. Extrinsic evidence is identified or produced in accordance with
the local rule and set forth in the following exhibits:

MICROSOFT CORPORATION'S PATENT LOCAL
RULE 4-2 DISCLOSURE (LIMITED TO "MINK
-2- MARKMAN" CLAIMS), CASE No. C 01-1640 SBA

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Exhibit D: Contains copies of excerpts from dictionaries and other publications. Due to
the volume of the appended pages, Exhibit D will be served via Federal Express.

Exhibit E: Contains a list of selected production documents, identified by initial bates
number.

Exhibit F: Contains a list of selected, uncited prior art publications, identified by bates
numbers).

Exhbit G: Contains a list of selected, uncited prior art patents, identified by bates
numbers).

In addition to the extrinsic evidence cited in Exhibits D-G, Microsoft incorporates by
reference herein and reserves the right to rely upon: 1) all documents identified by InterTrust in

response to discovery or pursuant to the Patent Local Rules; 2) all InterTrust patents,

publications and other things that aic prior art to any Mini-Markman claim; and 3) the testimony

i

of InterTrust and the witnesses identified below.

Preliminary Identification of Witnesses 1
Professor John Mitchell: Dr. Mitchell will testily of the following matters:

1) that certain of the presently disputed terms and phrases used in the twelve claims are
amorphous terms lacking a well-defined, precise meaning that can accurately be gleaned from
technical or other dictionaries. Rather, these terms are used in the art and/or in the patents in a
manner that requires close consideration of the entire patent specification to put them in proper
context and determine their precise, correct meaning as used in the patents. These terms include
!!secuie.J^^^

'securely" "security,'* "virtual distribution environment";

2) that the concepts stated in the InterTrust patents were known to the art, including the
cited prior art, which cited art he will describe;

1 In accordance with the local rules, Microsoft identifies witness testimony that it contends will
support its construction. It has not identified herein testimony relevant to the "tutorial" to be held
prior to the claim construction hearing.

MICROSOFT CORPORATION'S PATENT LOCAL
RULE 4-2 DISCLOSURE (LIMITED TO "MINI-
-3- MARKMAN* CLAIMS), Case No. C 01-1640 SBA

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3) the level of skill, background, and understanding (including extent thereof) of the
relevant patent application disclosures by a person of skill in the art; and

4) the meaning and scope certain disputed claim language, including "secure container,"
"control,'' "govern," "protect," "protected processing environment," "secure," "securely,"
"security," and "virtual distribution environment"

Professor David Maier: Dr. Maier will testify on the following matters:

1) what the February 13, 1995, patent application (SN 08/388,107) and the seven
InterTrust patents, described as the "invention;" more particularly, what are the required,
necessary, non-optional features of the "VDE" "invention" as stated in the patents. This
description will include an explanation of the features set forth in Microsoft's "Global
Constructions" (Exhibit A).

2) what the February 13, 1995, patent application (SN 08/388,107) and the seven
InterTrust patents, required as necessary, non-optional building blocks to implement the "VDE"
"invention" as stated in the patents.

Dated: December 20, 2002

WILLIAM L. ANTHONY V.
ERIC L. WESENBERG
HEIDI L.KEEFE

ORRICK HERRINGTON & SUTCLIFFE, LLP
1000 Marsh Road
MenloPark,CA 94025
Telephone: 650=6T4^7400~

STEVEN ALEXANDER
KRISTIN L. CLEVELAND
JAMES E. GERINGER
JOHN D. VANDENBERG

KLARQUIST SPARKMAN, LLP

One World Trade Center, Suite 1 600
121 S.W.Salmon Street
Portland, OR 97204
Telephone: 503-226-7391

MICROSOFT CORPORATION'S PATENT LOCAL
RULE 4-2 DISCLOSURE (LIMITED TO "MINI-
-4- MARKMAN" CLAIMS), Case No. C 01-1 640 SBA

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Attorneys for Defendant
MICROSOFT CORPORATION

Of Counsel:

T. Andrew Gilbert, Esq.
Microsoft Corporation
One Microsoft Way
Building 8

Redmond, WA 98052-6399
Telephone: 425-882-8080

-5-

MICROSOFT CORPORATION'S PATENT LOCAL
RULE 4-2 DISCLOSURE (LIMITED TO "MINI-
MARKMAN" CLAIMS), CASE No. C 01-1640 SBA

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DECLARATION 6F SERVICE BY E MAIL
I am more than eighteen years old and not a party to this action. My place of employment

and business address is 121 S.W. Salmon St., Suite 1600, Portland, OR 97204.

On December 20, 2002, at 3:00 p.m., I served on counsel for InterTrust Technologies

Corporation:

MICROSOFT CORPORATION'S PATENT LOCAL RULE 4-2
DISCLOSURE OF PRELIMINARY CLAIM CONSTRUCTION AND
EXTRINSIC EVIDENCE (LIMITED TO U MINI-MARKMAN W CLAIMS)

by email delivery to:

Michael H. Page, Esq.
JohnW. Keker,Esq.
Jon B. Streeter, Esq.
Keker& Van Nest, LLP
710 Sansome Street
San Francisco, CA 94111
Telephone: 415-391-5400
Facsimile: 415-397-7188
Email: mhp@Jcvn.com

Douglas Derwin

InterTrust Technologies Corporation
4800 Patrick Henry Drive
Santa Clara, CA 95054
Telephone: 408-855-0100
Facsimile: 408-855-0144
Email: dderwin@intertrust.com

Steven H. Morrissett, Esq.
Finnegan Henderson Farabow

Garrett & Dunner
Stanford Research Park
700 Hansen Way
Palo Alto CA 94304-1016
Telephone: 202-408-4000
Facsimile: 202-408-4400
Email: steven.momssett@iinnegan.com

I declare under penalty of pequiy thai the foregoing is true and correct
Executed on December 20, 2002, at Portland, Oregon.

(SIGNATURE)
(PRINT NAME)

-6-

MICROSOFT CORPORATION'S PATENT LOCAL
RULE 4-2 DISCLOSURE (LIMITED TO "MINI-
MARKMAN" CLAIMS), Case No. C 01-1640 SBA